Opposition Brief — RiseandShine Corporation, dba Rise Brewing, Petitioner v. PepsiCo, Inc.

Supreme Court briefJul 14, 2025

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NO. 24-1016

In the

Supreme Court of the United States

________________

RISEANDSHINE CORPORATION, DBA RISE BREWING,

Petitioner,

PEPSICO, INC.,

________________

Respondent.

On Petition for Writ of Certiorari to the

United States Court of Appeals

for the Second Circuit

________________

BRIEF IN OPPOSITION

________________

DIANA TORRES

KIRKLAND & ELLIS LLP

2049 Century Park East

Los Angeles, CA 90067

GEORGE W. HICKS, JR.

KIRKLAND & ELLIS LLP

1301 Pennsylvania Ave.

Washington, DC 20001

DALE M. CENDALI

Counsel of Record

KIRKLAND & ELLIS LLP

601 Lexington Avenue

New York, NY 10022

(212) 446-4800

dale.cendali@kirkland.com

Counsel for Respondent

July 14, 2025

QUESTION PRESENTED

Whether this Court should review an unpublished

summary order holding that there is no likelihood of

confusion between petitioner’s and respondent’s

trademarks, based on a question presented that

implicates no circuit split warranting intervention,

the merits of which petitioner did not raise below and

no lower court addressed, and resolution of which in

petitioner’s favor would not change the case’s outcome.

iii

CORPORATE DISCLOSURE STATEMENT

Respondent PepsiCo, Inc. has no parent

corporation, and no publicly held company owns more

than 10% of its stock.

TABLE OF CONTENTS

QUESTION PRESENTED ......................................... ii

CORPORATE DISCLOSURE STATEMENT ........... iii

TABLE OF AUTHORITIES ....................................... v

INTRODUCTION ....................................................... 1

STATEMENT OF THE CASE ................................... 4

A. Factual Background ..................................... 4

B. RBC Obtains a Preliminary Injunction. ...... 7

C. The Second Circuit Vacates the

Preliminary Injunction................................. 9

D. The District Court Grants Summary

Judgment to PepsiCo. ................................ 11

E. The Second Circuit Affirms. ....................... 12

REASONS FOR DENYING THE PETITION ......... 13

RBC Does Not Identify A Circuit Split

Warranting Review. .......................................... 13

II. This Case Is A Poor Vehicle To Address The

Question Presented. .......................................... 23

III. The Question Presented Is Not Of Sufficient

Importance To Warrant Review. ...................... 31

IV. The Decision Below Is Correct. ......................... 33

CONCLUSION ......................................................... 38

TABLE OF AUTHORITIES

Page(s)

Cases

A & H Sportswear, Inc. v. Victoria’s Secret

Stores, Inc.,

237 F.3d 198 (3d Cir. 2000)............................... 17

Affliction Holdings, LLC v. Utah Vap or

Smoke, LLC,

935 F.3d 1112 (10th Cir. 2019) ......................... 19

AMF Inc. v. Sleekcraft Boats,

599 F.2d 341 (9th Cir. 1979) ............................. 19

Anheuser-Busch Inc. v. Stroh Brewery Co.,

750 F.2d 631 (8th Cir. 1984) ............................. 32

Appliance Liquidation Outlet, L.L.C. v. Axis

Supply Corp.,

105 F.4th 362 (5th Cir. 2024) ........................... 18

Aronowitz v. Health-Chem Corp.,

513 F.3d 1229 (11th Cir. 2008) ................... 18, 19

Arrowpoint Capital Corp. v. Arrowpoint

Asset Mgt., LLC,

793 F.3d 313 (3d Cir. 2015)............................... 19

AWGI, LLC v. Atlas Trucking Co.,

998 F.3d 258 (6th Cir. 2021) ............................. 18

B&B Hardware, Inc. v. Hargis Industries,

Inc.,

575 U.S. 138 (2015) ........................................... 30

Boston Duck Tours, LP v. Super Duck

Tours, LLC,

531 F.3d 1 (1st Cir. 2008) ................................. 19

City & Cnty. of San Francisco, Cal., v.

Sheehan,

575 U.S. 600 (2015) ........................................... 28

Cooper Indus. v. Aviall Servs., Inc.,

543 U.S. 157 (2004) ........................................... 34

Donchez v. Coors Brewing Co.,

392 F.3d 1211 (10th Cir. 2004) ......................... 20

E.T. Browne Drug Co. v. Cococare Prods.,

Inc.,

538 F.3d 185 (3d Cir. 2008)............................... 20

Elevate Fed. Credit Union v. Elevations

Credit Union,

67 F.4th 1058 (10th Cir. 2023) ......................... 19

Eli Lilly & Co. v. Nat. Answers, Inc.,

233 F.3d 456 (7th Cir. 2000) ............................. 18

Future Proof Brands, L.L.C. v. Molson Coors

Beverage Co.,

982 F.3d 280 (5th Cir. 2020) ............................. 17

George & Co. v. Imagination Ent. Ltd.,

575 F.3d 383 (4th Cir. 2009) ............................. 19

vii

In re Guild Mortg. Co.,

912 F.3d 1376 (Fed. Cir. 2019) ......................... 19

Hana Financial, Inc. v. Hana Bank,

574 U.S. 418 (2015) ............... 3, 28, 29, 33, 35-37

Homeowners Grp., Inc. v. Home Mktg.

Specialists, Inc.,

931 F.2d 1100 (6th Cir. 1991) ........................... 19

Jack Daniel’s Props., Inc. v. VIP Prods. LLC,

599 U.S. 140 (2023) ........................................... 18

Kingdomware Techs., Inc. v. United States,

579 U.S. 162 (2016) ........................................... 27

Lang v. Ret. Living Publ’g Co.,

949 F.2d 576 (2d Cir. 1991)................................. 7

Lerner & Rowe PC v. Brown Engstrand &

Shely LLC,

119 F.4th 711 (9th Cir. 2024) ........................... 20

Lodestar Anstalt v. Bacardi & Co.,

31 F.4th 1228 (9th Cir. 2022) ........................... 20

Loper Bright Enters. v. Raimondo,

603 U.S. 369 (2024) ........................................... 18

McGregor-Doniger Inc. v. Drizzle Inc.,

599 F.2d 1126 (2d Cir. 1979)............................. 27

Miller v. Fenton,

474 U.S. 104 (1985) ..................................... 24, 29

viii

Moke Am. LLC v. Moke Int’l Ltd.,

126 F.4th 263 (4th Cir. 2025) ........................... 32

Nabisco, Inc. v. Warner-Lambert Co.,

220 F.3d 43 (2d Cir. 2000) ................................ 26

OBB Personenverkehr AG v. Sachs,

577 U.S. 27 (2015) ............................................. 27

Ornelas v. United States,

517 U.S. 690 (1996) ........................................... 36

Petro Shopping Centers L.P. v. James River

Petroleum, Inc.,

130 F.3d 88 (4th Cir. 1997) ............................... 19

Polaroid Corp. v. Polarad Electronics Corp.,

287 F.2d 492 (2d Cir. 1961)............... 8, 13, 32, 33

Pullman-Standard v. Swint,

456 U.S. 273 (1982) ........................................... 29

Rent-A-Center, W., Inc. v. Jackson,

561 U.S. 63 (2010) ............................................. 27

Santa Fe Independent School District v. Doe,

530 U.S. 290 (2000) ..................................... 36, 37

Scenic Am., Inc. v. Dep’t of Transp.,

138 S.Ct. 2 (2017) .............................................. 29

Sensient Techs. Corp. v. SensoryEffects

Flavor Co.,

613 F.3d 754 (8th Cir. 2010) ............................. 20

Sorensen v. WD-40 Co.,

792 F.3d 712 (7th Cir. 2015) ............................. 21

Star Indus., Inc. v. Bacardi & Co.,

412 F.3d 373 (2d Cir. 2005)............................... 27

Swatch AG v. Beehive Wholesale, LLC,

739 F.3d 150 (4th Cir. 2014) ............................. 20

Team Tires Plus, Ltd. v. Tires Plus, Inc.,

394 F.3d 831 (10th Cir. 2005) ........................... 18

Teva Pharms. USA, Inc. v. Sandoz, Inc.,

574 U.S. 318 (2015) ........................................... 18

The Sports Auth., Inc. v. Prime Hosp. Corp.,

89 F.3d 955 (2d Cir. 1996) ................................ 27

Town of Chester, N.Y., v. Laroe Ests., Inc.,

581 U.S. 433 (2017) ........................................... 28

United States PTO v. Booking.com B.V.,

591 U.S. 549 (2020) ...................... 3, 28, 29, 33-35

United States v. Detroit Timber & Lumber

Co.,

200 U.S. 321 (1906) ........................................... 34

Variety Stores, Inc. v. Wal-Mart Stores, Inc.,

888 F.3d 651 (4th Cir. 2018) ............................. 17

Welding Servs., Inc. v. Forman,

509 F.3d 1351 (11th Cir. 2007) ......................... 20

Zivotofsky ex rel. Zivotofsky v. Clinton,

566 U.S. 189 (2012) ..................................... 28, 29

Statutes

15 U.S.C. § 1064(3) ................................................. 35

15 U.S.C. § 1114(1)(A) ............................................ 18

Other Authorities

Barton Beebe, An Empirical Study of the

Multifactor Tests for Trademark

Infringement,

94 Cal. L. Rev. 1581 (2006) ............................... 19

FIFTH CIR. PATTERN CIVIL JURY

INSTRUCTIONS (CIVIL CASES) (rev. 2024) ........... 22

MCCARTHY ON TRADEMARKS & UNFAIR

COMPETITION (5th ed. 2025) ..... 14, 17, 30, 31, 35

NINTH CIR. MANUAL OF MODEL CIVIL JURY

INSTRUCTIONS (Mar. 2025 update) .................... 22

INTRODUCTION

This case is a run-of-the-mill trademark dispute

in which petitioner RiseandShine Corporation

(“RBC”), having twice unanimously lost before the

Second Circuit—most recently in an unpublished

summary order—asks this Court to address an issue

that implicates no circuit split, was not raised or

addressed below, would not make a difference to the

outcome, and lacks sufficient importance to warrant

this Court’s intervention. Certiorari should be denied.

In 2015, RBC, a newly-formed startup, set out to

develop a nitrogen-infused cold brew coffee. But when

it tried to register the trademark RISE COFFEE CO.

with the U.S. Patent & Trademark Office (“PTO”), the

PTO rejected its application because of the many other

products using the word “rise,” thus creating a

likelihood of confusion. RBC responded that because

“many entities” use the word “rise,” the word is

“extremely weak,” defeating likelihood of confusion.

The PTO nevertheless reaffirmed its refusal, and RBC

instead registered another “rise”-based mark, RISE

BREWING CO.

Several years later, when a

competitor demanded that RBC cease using marks

similar to its own using the word “rise,” RBC likewise

responded that the word “rise” is “so commonly used”

that marks using that word are “relatively weak.”

Shortly thereafter, however, RBC did an aboutface. In 2021, it filed this Lanham Act trademark

infringement suit against respondent PepsiCo, Inc.

(“PepsiCo”), which had recently launched an energy

drink called Mountain Dew Rise Energy using the

trademark MTN DEW RISE ENERGY. Contrary to

its prior representations, RBC contended that the

word “rise” renders its trademark strong and

PepsiCo’s use of “rise” creates a likelihood of confusion

between PepsiCo’s trademarks for its energy drink

and RBC’s trademarks for its coffee product.

RBC obtained a preliminary injunction enjoining

use of PepsiCo’s mark. But the Second Circuit

unanimously vacated the injunction, pointing to

RBC’s prior representations regarding the weakness

of the word “rise,” the nearly 100 products on the

market using the term “rise,” the many associations

between the word “rise” and coffee, and the numerous

dissimilarities between RBC’s and PepsiCo’s marks.

On remand, the district court granted summary

judgment to PepsiCo, and the Second Circuit affirmed

in an unpublished, unsigned summary order.

That order does not merit this Court’s

intervention. First, RBC contends that review is

necessary to resolve a circuit split over whether

“trademark strength” is a question of fact or question

of law. But trademark strength consists of two

subcomponents—acquired strength and conceptual

strength—and there is no circuit split on acquired

strength, which all courts treat as factual. RBC

appears to contend that the Second Circuit alone

treats conceptual strength as a question of law, but

that argument assumes that the conceptual strength

inquiry consists only of determining a mark’s level of

distinctiveness, i.e., its “classification” on a spectrum

from generic to arbitrary. In the Second Circuit,

though, as in other circuits, a mark’s level of

distinctiveness is only the starting point for

determining conceptual strength. The additional

analysis that courts like the Second Circuit further

undertake—which RBC does not challenge—

implicates legal elements such as the meaning of the

word at issue, and RBC identifies no circuit that treats

that further inquiry as a question of fact. Nor would

any marginal differences warrant intervention, for

courts routinely grant summary judgment on the

conceptual strength subcomponent, as well as on

overall likelihood of confusion based on other factors

in each circuit’s respective multifactor test.

Second, this case is an exceptionally poor vehicle

to address the question presented. A ruling for RBC

would not change this case’s outcome given the

reasoning below, unchallenged Second Circuit

precedent, and the record. RBC also never raised

below—and no decision below addressed—the merits

arguments it now presses, including that United

States PTO v. Booking.com B.V., 591 U.S. 549 (2020),

and Hana Financial, Inc. v. Hana Bank, 574 U.S. 418

(2015), require treating trademark strength as a

factual question. And this Court would have to

address significant threshold questions, including the

role of trademark strength and its subcomponents in

the likelihood-of-confusion inquiry, and how to

evaluate trademark strength when a plaintiff alleges

“reverse confusion,” as here.

Third, the question presented is not of sufficient

importance to warrant review. RBC cites no cases

turning on this issue, and its invocation of forumshopping and jury-right concerns is unavailing.

Finally, neither Booking.com nor Hana Financial

addresses this issue or demonstrates that the decision

below is incorrect. The petition should be denied.

STATEMENT OF THE CASE

A. Factual Background

1. RBC was founded in 2015 by three prep-school

classmates and their friend, whose goal was to “find

something … that would have [them] retired by forty.”

C.A.App.535, 537-38, 997. RBC’s founders decided to

capitalize on the then-hot trend of nitrogen-infused

cold brew coffee. C.A.App.997-98.

The founders initially chose RISE COFFEE CO.

for the company’s trademark. C.A.App.898. They

explained that the name “rise” “symbolizes the start of

a new day and getting up and on the go” and that

“[t]here’s something energetic” about it. C.A.App.977.

In choosing the RISE COFFEE CO. trademark, RBC

joined at least 22 other companies already using the

word “rise” in their products’ names, including RISE

for coffee, RISE for beer, RISE UP for coffee, and RISE

UP COFFEE ROASTERS, as the following marks

show:

C.A.App.404-10, 491-98.

RBC attempted to register RISE COFFEE CO.

with the PTO. C.A.App.916. The PTO rejected RBC’s

application, citing a “likelihood of confusion with prior

registrations” for trademarks also using the word

“rise,” namely RISE UP, RISE UP COFFEE

ROASTERS, and RISE UP ORGANIC COFFEE.

C.A.App.436-37. RBC urged the PTO to reconsider,

arguing: “[M]any entities have used the word ‘Rise’ in

relation to [RBC’s] goods, making it unlikely that

consumers would give significant weight to this term

in ascertaining the source of such goods.”

C.A.App.438. Accordingly, RBC continued, the “term

‘Rise’ is extremely weak and diluted, such that it

creates little source identifying significance that could

contribute to any likelihood of confusion.”

C.A.App.439 (emphasis added).

The PTO reaffirmed its refusal. C.A.App.214.

RBC changed its mark to RISE BREWING CO. and

reapplied. The PTO registered RISE BREWING CO.,

indicating that it found the word “brewing” (not “rise”)

sufficient to differentiate RBC’s new mark.

C.A.App.260, 267.

In 2016, RBC launched its coffee product, which it

sells in 7-ounce cans:

C.A.App.97.

In 2018, RBC received a cease-and-desist letter

from a company identifying similarities in the parties’

logos (which both contained “rise”) and noting that the

company had used its logo for “coffee[] since 2012.”

C.A.App.983.

RBC responded that “RISE is so

commonly used” that trademarks using the word

“rise” are “relatively weak and afforded only a narrow

scope of protection.”

C.A.App.988-92 (emphasis

added).

2. In 2020, PepsiCo began developing an energy

drink. PepsiCo created an innovative, caffeinated,

fruit-flavored energy drink featuring ingredients like

zinc, antioxidants, and vitamins.

C.A.App.302.

PepsiCo extended the iconic MTN DEW brand and

chose the name MTN DEW RISE ENERGY (here,

MDRE) because it evoked “morning energy and new

beginnings” and the concept of “‘rising up’ and

overcoming obstacles.” C.A.App.306, 940.

PepsiCo’s brand team designed a lion’s head logo

to serve as MDRE’s symbol and connected it to MTN

DEW by using the triangular shards from MTN DEW

cans.

C.A.App.303.

The lion’s head was the

centerpiece of the 16-ounce MDRE can. App.17a;

C.A.App.303. The logo design also featured the MTN

DEW house mark and vivid colors for each flavor:

App.17a; C.A.App.306. MDRE launched nationwide

in March 2021. C.A.App.302.

B. RBC Obtains a Preliminary Injunction.

In 2021, RBC sued PepsiCo, alleging violations of

the Lanham Act and state law. RBC alleged liability

based on, inter alia, a “reverse confusion” theory,

under which a junior user “selects a trademark that is

likely to cause consumers to believe, erroneously, that

the goods marketed by the [senior] user are produced

by the [junior] user.” Lang v. Ret. Living Publ’g Co.,

949 F.2d 576, 583 (2d Cir. 1991); App.78a. RBC

sought a preliminary injunction enjoining PepsiCo’s

mark.

The district court granted the preliminary

injunction, concluding that RBC had demonstrated

that PepsiCo’s actions are “likely to cause confusion.”

App.76a-77a. The court applied the eight factors the

Second Circuit uses to evaluate “likelihood of

confusion”: “(1) the strength of the trademark; (2) the

degree of similarity between the plaintiff’s mark and

the defendant’s allegedly imitative use; (3) the

proximity of the products and their competitiveness

with each other; (4) the likelihood that the plaintiff

will ‘bridge the gap’ by developing a product for sale in

the defendant’s market; (5) evidence of actual

consumer confusion; (6) evidence that the defendant

adopted the imitative term in bad faith; (7) the

respective quality of the products; and (8) the

sophistication of the relevant population of

consumers.” App.79a (citing Polaroid Corp. v. Polarad

Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961)).

The court determined that the “strength of the

mark” factor “tilts slightly” toward RBC because “the

word ‘RISE’ is suggestive” and RBC had provided

some evidence of “market distinctiveness.” App.80a84a. The court added that the “similarity of the

marks” factor “tips strongly” toward RBC. App.84a,

86a. The court concluded that three remaining factors

favored RBC, two were inconclusive or neutral, and

one was inapplicable. App.87a-90a.

Weighing the Polaroid factors, the district court

held that RBC would likely prevail in showing

likelihood of confusion. App.80a, 91a. The court also

concluded that RBC had satisfied the

preliminary-injunction factors. App.91a-94a.

C. The Second Circuit

Preliminary Injunction.

Vacates

other

the

The Second Circuit unanimously vacated the

preliminary injunction. App.45a-63a. In an opinion

by Judge Leval, the court held that the preliminary

injunction was “premised on two significant errors.”

App.46a.

First, the district court erred in concluding that

the strength of RBC’s mark “slightly favored” RBC.

The Second Circuit noted that a mark’s strength is

comprised of its “inherent strength” and “acquired

strength.” App.6a-7a. As to inherent strength, the

Second Circuit agreed with the district court that

RBC’s mark should be classified as “suggestive,” but

“labeling a mark as ‘suggestive’ is not the end of the

inquiry,” because “it can be difficult to distinguish

weak suggestive marks from descriptive ones.”

App.54a. The court then observed that “the strong

logical associations between ‘Rise’ and coffee represent

weakness and place the mark at the low end of the

spectrum of suggestive marks.” App.29a; see also

App.56a (cataloguing the “close associations between

the word ‘Rise’ and coffee,” which “constitute[] a

weakness of the mark under the trademark law”). The

Second Circuit also noted that RBC had previously

“acknowledged” that “the presence of multiple marks

using the word ‘Rise’ indicated the mark’s weakness.”

App.58a. The district court’s failure to account for

these aspects, the Second Circuit observed,

“constituted legal error.” App.55a. In so holding, the

court explained that while “classification of a mark is

a factual matter,” there “is an undeniable legal

element in the determination of how much strength a

given mark commands.” Id.

As for “acquired strength,” the court saw “merit”

in PepsiCo’s argument that, because RBC alleged

“reverse confusion,” any acquired strength would not

help RBC. App.60a. It did not resolve that issue,

however, because RBC had not shown “sufficient

acquired strength to counterbalance the inherent

weakness of its mark.” App.61a.

Second, the Second Circuit examined the

similarity-of-the-mark factor and deemed the district

court’s finding that RBC’s and PepsiCo’s marks are

“confusingly similar” to be “clear error.” App.61a. The

court reviewed the two products’ features and

concluded that “the differences appear far more

notable than the similarities,” including the use of the

colorful lion’s head and the fact that RBC’s “sevenounce can is less than half the size of Defendant’s

sixteen-ounce can,” as shown here:

App.62a.

In short, there was “little about the

appearance of the two cans that would suggest to a

consumer that they come from the same source.”

App.63a.

D. The District Court Grants Summary

Judgment to PepsiCo.

After discovery, PepsiCo moved for summary

judgment. RBC submitted no new evidence on

inherent strength, arguing instead that the Second

Circuit relied on “hearsay” in determining that its

mark was “inherently weak.” Dkt.398 at 6-7.

The district court granted summary judgment for

PepsiCo. App.15a-44a. As to inherent strength, the

court adhered to the Second Circuit’s observation that

the mark was “‘decidedly’ weak,” a conclusion “based

on the nature of the mark and not on any extrinsic

evidence.” App.29a. As to acquired strength, the court

held that RBC failed to create a genuine factual

dispute, noting in particular RBC’s failure to submit

any survey evidence establishing secondary meaning.

App.32a.

As to similarity, the district court acknowledged

the Second Circuit’s holding that deeming the marks

similar was “clear error.” App.34a-35a. It then noted

that “the record has not changed since the Second

Circuit’s decision.” App.35a. Thus, this factor “weighs

strongly against” RBC. Id. The court also concluded

that one remaining factor favored neither party,

another was inapplicable, and four favored RBC—

though, in some respects, “only slightly, given the

nature and quantum of evidence.” App.39a.

The district court then weighed the factors,

mindful that it “should focus on the ultimate question

of whether consumers are likely to be confused,” and

noting that, in the Second Circuit, the “ultimate

question of consumer confusion” is “a question of law.”

App.42a. The court concluded that RBC had not

shown a likelihood of confusion, warranting summary

judgment for PepsiCo. App.43a.

E. The Second Circuit Affirms.

RBC appealed. RBC did not challenge the district

court’s ruling that the “similarity” factor “weighs

strongly against” it. App.35a. Instead, it made three

arguments. First, the district court “misinterpreted”

the Second Circuit’s initial opinion “as having

resolved” the “inherent strength” issue “as a matter of

law” when, instead, Second Circuit precedent required

treating that issue as a factual matter. C.A.Br.17.

RBC alleged a factual dispute on inherent strength by

citing dictionary definitions for the word “Rise”—an

argument it did not make in the district court.

CA.Br.29-30. Second, on acquired strength (the other

subcomponent of trademark strength), the district

court “ignor[ed] key evidence, resolv[ed] factual

disputes, and fail[ed] to draw all inferences in [RBC]’s

favor.” C.A.Br.21. Third, the district court erred by

“treating the test for likelihood of confusion as a

question of law instead of a question of fact.”

C.A.Br.21.

In an unpublished, unsigned summary order, the

Second Circuit unanimously affirmed. App.1a-14a.

On inherent strength, the court held that the district

court “correctly concluded that it was bound by the

previous panel’s determination” that “rise” is “an

inherently weak mark for a coffee product” given its

association with coffee, caffeine, and beginning the

morning. App.7a. The court next held that RBC had

not “raised triable issues of fact regarding the

acquired strength of its mark.” App.8a. The court

observed, as had the district court, that the record on

acquired strength had barely changed since the

preliminary injunction proceedings, and it noted in

particular the “absence of any consumer studies that

link ‘RISE’ to [RBC].” App.9a. Although “not the only

way to establish” acquired strength, the “absence of

survey evidence is probative.” Id. Finally, the court

rejected RBC’s argument that likelihood of confusion

is a question of fact rather than law. App.10a.

The Second Circuit concluded by stating that

there is “not a likelihood that consumers would be

confused by PepsiCo’s use of the term ‘Rise.’” App.11a.

The court noted that it has “found the similarity-ofmarks” factor “dispositive at the summary judgment

stage.” App.12a. Regardless, “when viewing the

Polaroid factors in the aggregate … there is no

likelihood of confusion and thus summary judgment

was warranted in PepsiCo’s favor.” App.13a.

REASONS FOR DENYING THE PETITION

RBC Does Not Identify A Circuit Split

Warranting Review.

RBC contends that the Court should intervene

because “[t]welve circuits consider trademark

strength an issue of fact” while the Second Circuit

alone “consider[s] it a question of law.” Pet.i. This

characterization is imprecise at best, as RBC fatally

ignores that “trademark strength,” one of the many

factors in determining likelihood of confusion, is itself

comprised of two subcomponents: “conceptual

strength” (or “inherent strength”) and “acquired

strength.” See App.6a; MCCARTHY ON TRADEMARKS &

UNFAIR COMPETITION §11.80 (5th ed. 2025). As Judge

Leval’s decision below illustrates, conceptual strength

can incorporate a legal element when the inquiry goes

beyond mere classification of a mark and includes

examining the inherent meaning of a word, while

acquired strength looks to external evidence like sales

and advertising. There is no circuit split on whether

that additional analysis of conceptual strength, i.e.,

beyond classification of a mark’s distinctiveness, is a

question of fact or law. And both trademark strength

and the ultimate determination of likelihood of

confusion are routinely decided on summary judgment

across all circuits when there is no true issue for the

jury to decide.

A. RBC’s question presented alleges a split over

“trademark strength,” which RBC defines as a

trademark’s “level of distinctiveness.” Pet.i. RBC

asserts that this “spectrum for distinctiveness” refers

to a mark’s “conceptual strength” (or “inherent

strength”), and that “every circuit in the nation …

treats the conceptual strength of a trademark as a

question of fact.” Pet.10-11. Elsewhere, however,

RBC acknowledges that “trademark strength”

includes not just “conceptual strength” but also

“acquired strength,” and argues that “the circuit

courts consider a trademark’s conceptual and acquired

strength as factual questions.” Id. at 1. Still other

times, RBC refers generally to a split over “strength of

the mark” without identifying whether it means

overall trademark strength, conceptual strength, or

acquired strength. See id. at 10, 13, 14, 18.

RBC is equally imprecise in describing how the

Second Circuit purportedly diverges from other

circuits. After contending that other circuits “consider

a trademark’s conceptual and acquired strength as

factual questions,” RBC asserts that only the Second

Circuit “consider[s] it a legal question,” without

specifying whether “it” refers to overall trademark

strength, conceptual strength, or acquired strength.

Id. at 1 (emphases added). RBC later refers to the

Second Circuit treating both “conceptual strength”

and “acquired strength” as “questions of fact,” before

describing the court’s alleged shift to treating

“strength of mark”—i.e., conceptual strength and

acquired strength—“as a ‘legal’ question.” Id. at 1213.

This imprecision is significant because, while

RBC contends that the Second Circuit “applies a

different standard for trademark law than everywhere

else in the country,” RBC never contends that the

Second Circuit treats acquired strength any

differently than other circuits. Nor could it, because

the decision below unquestionably treated acquired

strength as a question of fact, concluding that RBC

had not “raised triable issues of fact regarding the

acquired strength of its mark.” App.8a. Given that

acquired strength is one of the two subcomponents of

trademark strength, and all circuits (including the

Second Circuit) treat acquired strength as a question

of fact, it is thus inaccurate for RBC to allege that the

Second Circuit “treat[s] strength of mark as an issue

of law,” Pet.13 (capitalization altered), and that this

Court’s intervention is therefore necessary to “unify[]

the standard for analyzing the strength of a

trademark,” id. at 18.

Even as to conceptual strength, RBC’s allegation

of a circuit split is incorrect, and this case does not

implicate any divide among the circuits.

RBC

describes “conceptual strength” as where a mark lies

along the “spectrum for distinctiveness,” meaning how

it is classified “from generic on the weakest end to

arbitrary and fanciful on the strongest end.” Pet.10.

It then contends that such “conceptual strength”

should “be determined as a question of fact.” Id. RBC

points to the decision under review as “unambiguously

cement[ing]” the Second Circuit’s approach that

“conceptual strength” is a “question of law.” Id. at 13.

But that decision is unpublished and non-precedential

and thus could not have “cement[ed]” anything.

As for the only published decision in this case—

which is not under review, and arose in a preliminaryinjunction posture—the panel did not disagree that

“the classification of a mark is a factual matter.”

App.55a. And it agreed that RBC’s mark on the

“spectrum for distinctiveness” is properly classified as

“suggestive.” App.54a. But as the panel then

explained, conceptual strength involves more than

just a mark’s classification along the distinctiveness

spectrum; “labeling a mark as ‘suggestive’ is not the

end of the inquiry.” Id. It was in the course of

performing that additional analysis of conceptual

strength—beyond reviewing the mark’s placement on

the spectrum of distinctiveness—that the Second

Circuit observed that there can be a “legal element in

the determination of how much strength a given mark

commands.” App.55a. And it was only on that

additional basis that the court concluded that RBC’s

mark, although “suggestive,” was nevertheless

“decidedly weak.” App.57a.

The Second Circuit’s analysis of conceptual

strength beyond a mark’s classification on the

“distinctiveness” spectrum is correct and consistent

with other circuits’ approaches. The leading treatise

distinguishes

between

“distinctiveness”

and

“strength,” explaining that “strength” is “a question of

degree” from “very weak to very strong.” MCCARTHY

§11:75. Other courts of appeals likewise evaluate

conceptual strength beyond just looking at a mark’s

placement on the “distinctiveness” spectrum. For

example, the Fourth Circuit has held that a mark can

be “suggestive” but “conceptually weak,” because a

mark’s

“designation”

the

spectrum

distinctiveness “does not resolve the mark’s

conceptual strength.” Variety Stores, Inc. v. Wal-Mart

Stores, Inc., 888 F.3d 651, 662 (4th Cir. 2018). The

Third Circuit has held that “[a]lthough the conceptual

strength of a mark is often associated with the

particular category of ‘distinctiveness’ into which a

mark falls … , that is not the only measure of

conceptual strength.” A & H Sportswear, Inc. v.

Victoria’s Secret Stores, Inc., 237 F.3d 198, 222 (3d Cir.

2000). The Fifth Circuit has held that “the strength

inquiry is different from the distinctiveness inquiry.”

Future Proof Brands, L.L.C. v. Molson Coors Beverage

Co., 982 F.3d 280, 290 (5th Cir. 2020). And so on.

RBC does not challenge this approach to

conceptual strength—i.e., additional analysis of a

mark’s conceptual strength beyond mere classification

of distinctiveness. More important, RBC does not

identify any circuit that treats that additional

analysis as a factual rather than legal question. That

should come as no surprise, for examining a mark’s

conceptual strength beyond its designation on the

spectrum of distinctiveness unquestionably implicates

legal issues, such as the meaning and associations of

a word. See, e.g., Teva Pharms. USA, Inc. v. Sandoz,

Inc., 574 U.S. 318, 325 (2015) (explaining that courts

“treat document construction as a question of law”); cf.

Loper Bright Enters. v. Raimondo, 603 U.S. 369, 38587 (2024). Because there is no split on how the circuits

treat this additional analysis of the conceptual

strength subcomponent of trademark strength, the

Court’s intervention is unnecessary.

Additionally, any marginal differences

concerning the extent to which conceptual strength is

a question of fact or law make virtually no difference

in the ultimate likelihood-of-confusion analysis that is

the “keystone” of Lanham Act cases. Jack Daniel’s

Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 147

(2023); see 15 U.S.C. §1114(1)(A).

Conceptual

strength is but one subcomponent of trademark

strength, which is but one of many factors in each

circuit’s multifactor balancing test for determining

likelihood of confusion. RBC breezily asserts, without

support, that these tests are “largely similar” and

consider trademark strength the “[c]hief” factor, Pet.i,

1, but in reality, the tests differ substantially in both

the number of factors and the emphases they place on

various factors. Some circuits employ six factors. See

Team Tires Plus, Ltd. v. Tires Plus, Inc., 394 F.3d 831,

833 (10th Cir. 2005). Others use seven, see Aronowitz

v. Health-Chem Corp., 513 F.3d 1229, 1239 (11th Cir.

2008); Eli Lilly & Co. v. Nat. Answers, Inc., 233 F.3d

456, 461–62 (7th Cir. 2000); still others, eight. See

Appliance Liquidation Outlet, L.L.C. v. Axis Supply

Corp., 105 F.4th 362, 381 (5th Cir. 2024); AWGI, LLC

v. Atlas Trucking Co., 998 F.3d 258, 264–65 (6th Cir.

2021); Boston Duck Tours, LP v. Super Duck Tours,

LLC, 531 F.3d 1, 10 n.6 (1st Cir. 2008); AMF Inc. v.

Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979);

App.50a. One circuit uses seven or nine factors. See

George & Co. v. Imagination Ent. Ltd., 575 F.3d 383,

393 (4th Cir. 2009); Petro Shopping Centers L.P. v.

James River Petroleum, Inc., 130 F.3d 88, 91 (4th Cir.

1997). Another uses ten. See Arrowpoint Capital

Corp. v. Arrowpoint Asset Mgt., LLC, 793 F.3d 313,

319 (3d Cir. 2015). And one even uses thirteen. See

In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir.

2019).

Within each of these tests, moreover, circuits have

identified different factors as the most important,

ranging from “degree of similarity” of marks, Affliction

Holdings, LLC v. Utah Vap or Smoke, LLC, 935 F.3d

1112, 1115 (10th Cir. 2019), to “actual confusion,”

George, 575 F.3d at 398, to “relatedness” of the goods,

Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc.,

931 F.2d 1100, 1109 (6th Cir. 1991). Only the

Eleventh Circuit considers “type of mark” to be “the

most important” factor. Aronowitz, 513 F.3d at 1239.

Given this “great diversity of factors” underlying

the circuits’ likelihood-of-confusion analyses, Barton

Beebe, An Empirical Study of the Multifactor Tests for

Trademark Infringement, 94 Cal. L. Rev. 1581, 1589

(2006)—which RBC does not ask this Court to

resolve—the issue of whether one subcomponent

(conceptual strength) of one factor (trademark

strength) is a question of fact or law does not warrant

review. Indeed, even where conceptual strength is a

factual question, courts frequently grant summary

judgment on that subcomponent. See, e.g., Elevate

Fed. Credit Union v. Elevations Credit Union, 67 F.4th

1058, 1075 (10th Cir. 2023) (holding that “any

reasonable juror would assign relatively weak

conceptual strength to” marks using word “elevate”);

Lodestar Anstalt v. Bacardi & Co., 31 F.4th 1228, 1259

(9th Cir. 2022) (holding that “no reasonable jury could

find that the Untamed Word Mark is arbitrary”);

Donchez v. Coors Brewing Co., 392 F.3d 1211, 1218

(10th Cir. 2004) (“We are not persuaded that a jury

could rationally find … that the term ‘beerman’ is

descriptive.”).

Even where there is a genuine factual dispute on

conceptual strength, moreover, courts frequently

grant summary judgment on overall trademark

strength after accounting for acquired strength—as

RBC’s cases demonstrate. See, e.g., E.T. Browne Drug

Co. v. Cococare Prods., Inc., 538 F.3d 185, 192 (3d Cir.

2008) (finding genuine factual dispute on conceptual

strength, but holding mark unprotected because no

genuine factual dispute on acquired strength). And

even when there is a genuine factual dispute on

overall trademark strength—or the mark is

determined to be strong—courts frequently grant

summary judgment on overall likelihood of confusion

based on other factors in the circuit’s respective

multifactor test. See, e.g., Lerner & Rowe PC v. Brown

Engstrand & Shely LLC, 119 F.4th 711, 719 (9th Cir.

2024) (affirming summary judgment of no likelihood

of confusion despite strong mark); Swatch AG v.

Beehive Wholesale, LLC, 739 F.3d 150, 162 (4th Cir.

2014) (same); Sensient Techs. Corp. v. SensoryEffects

Flavor Co., 613 F.3d 754, 764 (8th Cir. 2010) (same);

Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1361

(11th Cir. 2007) (declining to grant summary

judgment on lack of distinctiveness but granting

summary judgment on no likelihood of confusion); see

also Sorensen v. WD-40 Co., 792 F.3d 712, 726 (7th Cir.

2015) (“A court may grant summary judgment even if

there is a genuine issue of material fact as to one or

more of the seven factors, as long as no reasonable

jury, looking at the seven factors as a whole, could

conclude that there is a likelihood of confusion.”).

Additionally, the Second Circuit is one of several

circuits that treats the ultimate likelihood-ofconfusion determination as a question of law.

App.10a, 23a-24a. RBC challenged that approach

below but does not raise it here. Accordingly, even if

the conceptual strength subcomponent of trademark

strength were a factual question in the Second Circuit,

courts in that circuit could—and would—still

ultimately determine likelihood of confusion

regardless of any factual disputes among the factors.

That makes this case a particularly poor vehicle to

address the question presented, see p.26, infra, but

also underscores that any differences between the

Second Circuit and other circuits on whether one

subcomponent of one factor in a multifactor test is a

question of fact or law are ultimately immaterial and

do not warrant certiorari.

C. RBC’s argument that every other circuit holds

that “conceptual strength … should be determined …

by a jury” is also misguided and underscores the

broader infirmity of its position. Pet.10. In Lanham

Act cases, juries are not asked to “determine[]”

conceptual strength, or any other factor. Instead, they

are asked to determine likelihood of confusion—the

element required under the Lanham Act—as guided

by the multifactor test in each circuit.

Thus, for example, the Ninth Circuit’s model jury

instructions provide that the jury must determine if

the defendant used the trademark “in a manner that

is likely to cause confusion.” NINTH CIR. MANUAL OF

MODEL CIVIL JURY INSTRUCTIONS 15.6 (Mar. 2025

update). The instructions add that, to guide that

determination, the judge “will suggest some factors

you should consider,” which comprise the Ninth

Circuit’s eight-factor likelihood-of-confusion test. Id.

15.18. Similarly, the Fifth Circuit instructs juries to

determine “likelihood of confusion” by “consider[ing]

the following factors,” which comprise that circuit’s

multifactor test. FIFTH CIR. PATTERN CIVIL JURY

INSTRUCTIONS (CIVIL CASES) 14.10 (Trademark

Infringement) (rev. 2024).

Indeed, juries are

instructed that “[t]he absence or presence of any one

of the [factors] does not determine whether there is, or

is not, a likelihood of confusion.” Id.

In these and other circuits, therefore, the model

instructions, reflecting circuit law, not only

demonstrate that juries do not “determine” conceptual

strength (or any factor, for that matter) but also

reinforce that conceptual strength is only one

miniscule subcomponent of the overall likelihood-ofconfusion determination—one that a decisionmaker

need not even consider when making that

determination. That is not the stuff of a circuit split,

much less one that calls for this Court’s intervention.

II. This Case Is A Poor Vehicle To Address The

Question Presented.

Even if there were a circuit split warranting

review, this case would be a poor vehicle for resolving

that split for numerous reasons.

A. To begin, a decision holding that conceptual

strength is a question of fact would make no difference

to the outcome of this case. RBC contends that the

Second Circuit’s “treating conceptual strength as a

legal question … resolved the likelihood-of-confusion

analysis in this case,” Pet.1, 15-16, but that contention

ignores the decisions below, unchallenged Second

Circuit precedent, and the uncontroverted record.

First, even treating conceptual strength as a

question of fact, it is far from clear that, on remand,

the Second Circuit would not simply hold that no

reasonable jury could conclude that RBC’s mark was

conceptually strong—just as other courts have held in

similar circumstances. See pp.19-20, supra. The

Second Circuit recited a series of reasons why RBC’s

mark was “inherently weak” if not “decidedly weak.”

App.57a. Those reasons included (1) “the close

associations between the word ‘Rise’ and coffee”;

(2) the fact that there were, on the market, “over 100

uses of the term ‘Rise’ in connection with coffee, tea,

bottled beverages, energy drinks, soft drinks,

drinkable health supplements, cafes, yogurts, and

granolas”; and (3) most problematic, RBC’s own prior

acknowledgment to the PTO that “the presence of

multiple marks using the word ‘Rise’ indicated the

mark’s weakness,” and that the “term ‘Rise’ is

extremely weak and diluted” and would not contribute

to “any likelihood of confusion.” App.57a-58a. As the

Second Circuit explained, “If there was room for

[RBC’s] use of ‘Rise’ in the already crowded coffee field,

there would also be room for [PepsiCo’s], especially on

a product that is distinct from coffee.” App.59a.

This reasoning strongly indicates that, even

treating conceptual strength as a question of fact, the

Second Circuit would not alter its conclusion

regarding the conceptual strength of RBC’s mark.

Instead, it would conclude that RBC had raised no

genuine factual dispute that “rise” is not inherently

weak. That is particularly so given that, in opposing

summary judgment, RBC offered no new evidence on

conceptual strength. Instead, before the district court,

it argued that the Second Circuit’s conceptual

strength ruling relied on “hearsay”; then, on appeal, it

cited dictionary definitions for the word “Rise” (an

argument it never made in the district court). See

pp.11-12, supra. Indeed, it is entirely unclear exactly

what “historical fact[s]” regarding conceptual strength

need resolving in this case. Miller v. Fenton, 474 U.S.

104, 113-14 (1985). Determining that subcomponent

here does not turn on any disputed historical facts but

instead on the meaning of the word “rise” and what

RBC has represented about its mark (which is

uncontested).

Second, a decision by this Court would not affect

the rulings below against RBC as to acquired

strength—the other subcomponent of trademark

strength—which RBC does not challenge here. The

Second Circuit “agree[d] with the district court” that

“no reasonable jury could find that the primary

significance of the mark ‘RISE’ is to identify [RBC] as

the source of the product,” which is the test for

acquired strength. App.8a. The court noted that RBC

largely relied on the same acquired-strength evidence

that the court had previously rejected. And RBC’s

“minimal additional evidence” was “insufficient to

move the analytical needle.” App.9a. The court

observed in particular that RBC had failed to provide

“any consumer studies that link the ‘RISE’ mark to”

RBC. Id. Though not itself dispositive, that failure

was “probative” given RBC’s unpersuasive other

evidence of acquired strength. Id.

RBC contends that the Second Circuit “held that

[RBC’s]

evidence

acquired

marketplace

distinctiveness was not enough to overcome the legal

determination of the ‘mark’s inherent weakness,’” as

if to suggest that if the mark were deemed inherently

stronger, there would be a triable factual issue on

acquired strength or overall trademark strength.

Pet.9 (quoting App.9a–10a). But the Second Circuit

was clear that RBC had not “raised triable issues of

fact regarding the acquired strength of its mark.”

App.8a. Therefore, even if the district court ignored

the Second Circuit’s numerous criticisms of the

inherent strength of RBC’s mark, the lack of any

triable factual issue on acquired strength would

almost certainly result in a determination for PepsiCo

on overall trademark strength. As a result, the

outcome below would not change.

Third, RBC does not challenge the lower courts’

determinations that the “similarity” factor “strongly”

favors PepsiCo. App.35a. On remand after the Second

Circuit deemed “clearly erroneous” the district court’s

finding that RBC’s and PepsiCo’s marks were

“confusingly similar,” the district court noted that

RBC had offered no additional evidence on this factor

and, citing the Second Circuit’s decision, concluded

that this factor “weighs strongly against” RBC. Id.

RBC has never challenged that determination. That

concession is significant because, as the Second

Circuit observed below, it has held “the similarity-ofmarks factor dispositive at the summary judgment

stage when the marks are sufficiently dissimilar.”

App.12a (citing Nabisco, Inc. v. Warner-Lambert Co.,

220 F.3d 43, 46-48 (2d Cir. 2000)) (emphasis added).

Accordingly, even if this Court’s decision

(i) resulted in a change in the conceptual-strength

determination (ii) in a way that offsets the nowconceded lack of acquired strength, the Second Circuit

would nevertheless deem “dispositive” the nowconceded substantial dissimilarity between that mark

and PepsiCo’s marks. And even if the Second Circuit

did not find that factor dispositive, then because the

Second Circuit treats overall likelihood of confusion as

a question of law, it would almost certainly conclude

that there is no likelihood of confusion given the

“dissimilarity” factor weighing “strongly” against RBC

and the lack of any triable issue of fact on acquired

strength.1

Fourth, all else aside, the Second Circuit has held

that when a Lanham Act defendant submits

“consumer surveys tending to rebut charges of actual

1 RBC asserts that the district court had “determined that the

majority of the remaining likelihood-of-confusion factors favored”

RBC. Pet.16. But the district court held that those factors “only

slightly” favored RBC, and regardless, the Second Circuit largely

rejected them below for reasons not challenged here. See

App.12a-13a, 39a.

consumer confusion,” and a plaintiff “fail[s] to present

its own consumer survey,” Star Indus., Inc. v. Bacardi

& Co., 412 F.3d 373, 388 (2d Cir. 2005), then “actual

confusion cannot be shown,” The Sports Auth., Inc. v.

Prime Hosp. Corp., 89 F.3d 955, 964 (2d Cir. 1996).

And it is “proper” to “infer from the absence of actual

confusion that there was … no likelihood of confusion.”

McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126,

1136 (2d Cir. 1979). Here, PepsiCo proffered six

different surveys “rebut[ting] charges of actual

consumer confusion,” while RBC “fail[ed] to present

its own consumer survey.” Star Indus., 412 F.3d at

388; see C.A.App.912-914, 311-395, 945-949, 959-962,

625-630, 964-969; App.12a-13a (noting that RBC

“failed” to provide “consumer surveys”). Accordingly,

“actual confusion cannot be shown,” Sports Auth., 89

F.3d at 964, and it is “proper” to thus conclude that

there is no “likelihood of confusion,” McGregorDoniger, 599 F.2d at 1136. PepsiCo raised this

argument to the Second Circuit below, but the court

had no need to address it given its other holdings.

Nevertheless, it provides yet another reason why the

result of this case would not change following any

intervention by this Court, rendering this case an

extremely poor vehicle.

B. Furthermore, RBC’s question presented was

insufficiently raised and considered below. This Court

“normally decline[s] to entertain” arguments not

“raised … in the courts below.” Kingdomware Techs.,

Inc. v. United States, 579 U.S. 162, 173 (2016); see also

OBB Personenverkehr AG v. Sachs, 577 U.S. 27, 38

(2015); Rent-A-Center, W., Inc. v. Jackson, 561 U.S. 63,

75-76 (2010). RBC contended below that “the district

court erred by analyzing the RISE mark’s strength as

a question of law,” but only because Second Circuit

precedent purportedly required treating trademark

strength as a question of fact. C.A.Br.22-24. RBC

never argued the actual merits of whether trademark

strength is a question of law or fact. In particular, it

never argued that “treating strength of mark as an

issue of law contravenes this Court’s precedent.”

Pet.13 (capitalization altered). Despite emphasizing

them now, RBC did not once cite Booking.com below,

and it cited Hana Financial only when pressing a

completely different issue—that the ultimate

likelihood-of-confusion determination is a question of

fact rather than law—that it does not raise here. See

C.A.Br.18-20, 21-22, 37-45; C.A.Reply.19-26.

Moreover, because RBC did not argue the merits

of the question presented below, the Second Circuit

never addressed that issue. This Court “does not

ordinarily decide questions that were not passed on

below.” City & Cnty. of San Francisco, Cal., v.

Sheehan, 575 U.S. 600, 609 (2015); see also Town of

Chester, N.Y., v. Laroe Ests., Inc., 581 U.S. 433, 441

n.4 (2017) (given “lack of a reasoned conclusion on this

question from the Court of Appeals, we are not

inclined to resolve it in the first instance”). Rather,

the Court prefers “the benefit of thorough lower court

opinions” addressing the question presented.

Zivotofsky ex rel. Zivotofsky v. Clinton, 566 U.S. 189,

201 (2012). There is no such “thorough” opinion below

here.

The Court would thus be writing on a completely

blank slate—which is always suboptimal, but

especially here, given “the vexing nature of the

distinction between questions of fact and questions of

law.” Pullman-Standard v. Swint, 456 U.S. 273, 288

(1982); see also Miller, 474 U.S. at 113. Were the

Court ever inclined to review RBC’s question

presented, it should wait for a case where the issue

was raised and discussed below—including in light of

Booking.com and Hana Financial—resulting in a

published decision that would “guide [its] analysis,”

rather than undertake that analysis in the first

instance. Zivotofsky, 566 U.S. at 201.

C. Finally, to review the question presented, the

Court would have to address significant threshold

issues of first impression on which the lower courts are

divided but RBC does not seek review. See, e.g., Scenic

Am., Inc. v. Dep’t of Transp., 138 S.Ct. 2, 3 (2017)

(where case is “burdened with … antecedent …

questions,” the “proper course is to deny certiorari”).

The first of these is the test for determining likelihood

of confusion and what role trademark strength (and

any subcomponents, such as conceptual strength and

acquired strength) play in that analysis. This case, for

example, proceeded under the Second Circuit’s eightfactor test. But other circuits have different tests,

applying different factors and assigning different

levels of importance to those factors, including

trademark strength. See pp.18-19, supra. RBC does

not ask this Court to resolve those many differences.

Yet if the Court grants review, it will be required to

address the extent to which trademark strength—or,

more specifically, conceptual strength—affects the

likelihood-of-confusion analysis, even though different

circuits take varying approaches to that question and

no decision below addresses that issue.2

The second unaddressed threshold question

involves evaluating trademark strength when, as

here, “reverse confusion” is alleged. See App.32a

(“Plaintiff’s theory of liability is reverse confusion.”);

App.49a (noting that RBC “argues that [PepsiCo’s] use

of the word ‘Rise’ created a likelihood of reverse

confusion”). In reverse confusion cases, there are

“differences from the rules for forward confusion

cases,” particularly as to trademark strength.

MCCARTHY §23:10 (capitalization altered).

For

example, “[i]n a reverse confusion case,” it “makes no

sense to apply the forward confusion requirement that

the senior user have a mark strong enough that

confusion will result.” Id. Instead, “the court should

evaluate the strength of the junior user’s mark so as

to gauge its ability to overpower the senior user’s

mark.” Id.

Before this Court, however, RBC is not

challenging “the strength of the junior user’s [i.e.,

PepsiCo’s] mark.” Instead, it contends that its mark

(as the senior user) is stronger than the lower courts

determined. But focusing on the strength of RBC’s

mark “makes no sense” under RBC’s reverse-confusion

2 In B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S.

138 (2015), the Court noted that the “factors” in the Trademark

Trial and Appeal Board’s and Eighth Circuit’s likelihood-ofconfusion tests “are not fundamentally different.” Id. at 154. The

Court made that observation only in the context of determining

whether issue preclusion applied, however. It did not purport to

evaluate whether, in practice, applying the tests’ factors produces

materially different results. Nor, of course, did the Court address

any other circuit’s test or suggest a uniform test for all circuits.

theory. Id. At a minimum, the inconsistency between

RBC’s arguments and its theory of liability renders

this case unsuitable for review. If the Court were ever

inclined to review the question presented, it should do

so in a Lanham Act case premised on ordinary

“forward confusion,” not the uncommon case involving

“reverse confusion,” where trademark strength plays

a different role in the likelihood-of-confusion analysis.

III. The Question Presented Is Not Of Sufficient

Importance To Warrant Review.

The question presented also is of insufficient

importance to warrant this Court’s review. RBC

contends the issue is “critically important” principally

because the Second Circuit’s allegedly “unique,

incorrect standard” raises “forum-shopping concerns.”

Pet.16-17 (capitalization altered).

RBC cites no

evidence or precedent to support this assertion—or

any amicus support. Instead, it simply asserts that

“forum-shopping concerns are bound to arise.” Id. at

17. Not only is that statement vague and conclusory,

but by RBC’s own telling, the Second Circuit’s “shift”

to its new approach began over twenty years ago, in

2003, and has been regularly applied in cases since

2020. Id. at 15 n.1. Yet RBC identifies no noticeable

increase or decrease in Lanham Act cases filed within

the Second Circuit. For good reason: a Lanham Act

plaintiff’s choice of forum is not going to turn on

whether one subcomponent of a factor in a multifactor

test comprising six to thirteen other factors is a

question of fact or law—especially when that factor

could cut for or against a plaintiff. Regardless, if

forum-shopping concerns are “bound to arise,” the

better course is to allow further percolation and wait

to see if such concerns actually materialize, and only

then consider intervention (in a suitable vehicle,

unlike this case).

The question is also unimportant because it

matters, if at all, only in a small universe of cases—

specifically, Lanham Act cases within the Second

Circuit where the trademark strength factor (or, more

specifically, the conceptual-strength subcomponent of

that factor) would change if it were a question of fact

instead of a question of law, in a way that tips the

overall likelihood-of-confusion analysis away from one

party and toward the other when all the other

Polaroid factors are considered. That set of cases is

already miniscule (if it exists at all), but is even

smaller, and less significant, given that the overall

likelihood-of-confusion determination in the Second

Circuit is a legal question for the district court’s

plenary consideration and the appellate court’s de

novo review.

RBC’s appeal to the jury-trial right, Pet.17-18, is

also unavailing. For one, as RBC’s cases demonstrate,

many Lanham Act plaintiffs do not even request a jury

trial, or they seek only equitable relief. See, e.g., Moke

Am. LLC v. Moke Int’l Ltd., 126 F.4th 263, 269 (4th

Cir. 2025); Anheuser-Busch Inc. v. Stroh Brewery Co.,

750 F.2d 631, 633-35 (8th Cir. 1984). For another, as

noted, juries do not determine conceptual strength (or

even trademark strength); they determine likelihood

of confusion, of which conceptual strength is but a

small subcomponent that is not on verdict forms. See

pp.21-22, supra. For still another, even accepting the

erroneous premise that juries decide each likelihoodof-confusion factor individually, plaintiffs in the

Second Circuit would get a jury trial on all the

Polaroid factors except the conceptual strength

subcomponent—essentially, then, 7.5 out of the 8

factors. That is hardly the revocation of an “important

bulwark against tyranny and corruption” warranting

this Court’s intervention. Pet.17.

Even then, questions of fact can be taken from the

jury if the court believes the evidence is insufficient,

as is not-uncommon in Lanham Act cases. See pp.1920, supra. Accordingly, even if a jury found that a

mark had a particular level of conceptual strength,

either the district court or Second Circuit could hold

as a matter of law that the evidence did not support

that finding. Finally, as noted, courts in the Second

Circuit (and the Second Circuit itself) treat the

likelihood-of-confusion determination as a question of

law—a position unchallenged here. Accordingly,

whatever a jury may have found as to the conceptual

strength subcomponent is, in practice, subordinated to

the court’s overall assessment of likelihood of

confusion,

substantially

minimizing

that

subcomponent’s role in the ultimate inquiry.

IV. The Decision Below Is Correct.

RBC invokes Booking.com and Hana Financial to

argue that “treating strength of mark as an issue of

law contravenes this Court’s precedent.” Pet.13

(capitalization altered). As noted, no court has yet

addressed these arguments, but regardless, they are

unavailing.

At the outset, RBC frequently cites the

Booking.com syllabus, not the Court’s opinion. On the

petition’s very first page, for example, RBC quotes

from page 550 of Booking.com, which is the syllabus.

See United States v. Detroit Timber & Lumber Co., 200

U.S. 321, 337 (1906). RBC does so again later. See

Pet.14-15. Indeed, RBC quotes language—“generic (or

nongeneric) character”—found only in the syllabus.

Pet.14. This is not a promising start for RBC’s merits

argument.3

Regardless,

Booking.com

addressed

exceedingly narrow issue: whether the addition of

“.com” to a generic word is per se generic. 591 U.S. at

557. Rejecting that “sweeping rule,” the Court instead

held that “[w]hether any given ‘generic.com’ term is

generic … depends on whether consumers in fact

perceive that term as the name of a class or, instead,

as a term capable of distinguishing among members of

the class.” Id. at 551, 560-61. The Court did not

address whether that determination is a factual or

legal question.

RBC emphasizes the language

“whether consumers in fact perceive,” but that phrase

does not reflect a holding; rather, the parties had

agreed that “the relevant meaning of a term is its

meaning to consumers.” Id. at 556; see, e.g., Cooper

Indus. v. Aviall Servs., Inc., 543 U.S. 157, 170 (2004)

(noting that “[q]uestions which merely lurk in the

record” and are not “ruled upon” are “not to be

considered as having been so decided as to constitute

precedents”).

Furthermore, because the case arose from PTO

proceedings, the Court looked to the section of the

Lanham Act governing registration cancellation,

3 RBC also quotes language—“generic (or not generic)”—found

nowhere in the syllabus or opinion. Pet.1. Presumably RBC

meant “generic (or nongeneric),” but as noted, even that language

is only in the syllabus.

which provides that “[t]he primary significance of the

registered mark to the relevant public … shall be the

test for determining whether the registered mark has

become the generic name of goods or services.” 591

U.S. at 556 (quoting 15 U.S.C. §1064(3)). This case

does not arise from PTO proceedings and thus does not

implicate that statutory guidance. And even if

Booking.com had some applicability, that decision’s

reference to how “consumers in fact perceive” a mark,

id. at 560, would be relevant to determining a mark’s

acquired strength—which looks at a mark’s perception

in the actual marketplace—and not a mark’s

conceptual strength. See MCCARTHY §11:80 (defining

acquired strength as “the marketplace recognition

value of the mark,” which “evaluates the actual

customer recognition value of the mark”).

Hana Financial is likewise inapposite. It, too,

addressed a narrow and esoteric issue: “whether a

judge or jury should determine whether tacking is

available in a given case.” 574 U.S. at 420. “Tacking”

refers to a party “cloth[ing] a new mark with the

priority position of an older mark,” and it is available

“when the original and revised marks are ‘legal

equivalents’ in that they create the same, continuing

commercial impression.” Id. at 419-20. In a short,

unanimous opinion, the Court issued a concededly

limited holding: “We hold only that, when a jury trial

has been requested and when the facts do not warrant

entry of summary judgment or judgment as a matter

of law, the question whether tacking is warranted

must be decided by a jury.” Id. at 423.

Perhaps recognizing the decision’s narrow scope,

RBC invokes Hana Financial’s observation that

“[a]pplication of a test that relies upon an ordinary

consumer’s understanding of the impression that a

mark conveys falls comfortably within the ken of a

jury.” Pet.1 (quoting 574 U.S. at 422). As noted,

however, the “ordinary consumer’s understanding of

the impression that a mark conveys” is more suited

toward

acquired,

not

conceptual,

strength.

Regardless, this single statement made in the context

of a doctrine addressing how much a mark was

changed does not bear the weight that RBC places

upon it. For one, in its very next sentence, the Court

declined to adopt a categorical rule. See 574 U.S. at

422 (“[W]hen the relevant question is how an ordinary

person or community would make an assessment, the

jury is generally the decisionmaker that ought to

provide the fact-intensive answer.”

(emphasis

added)). The Court also recognized that “the question

whether tacking is warranted” must “be decided by a

jury” only “when the facts do not warrant entry of

summary judgment,” id. at 423. Hana thus reaffirms

that, as in many Lanham Act cases, questions of fact

can nevertheless be decided on summary judgment.

For another, it is far from true that operating from

the perspective of an ordinary person suffices to treat

an inquiry as a factual question. For example, in

Ornelas v. United States, 517 U.S. 690 (1996), this

Court held that whether there is reasonable suspicion

for a search is a legal question, even though it involves

“the factual and practical considerations of everyday

life on which reasonable and prudent men … act.” Id.

at 691, 695. Similarly, in Santa Fe Independent

School District v. Doe, 530 U.S. 290 (2000), the Court

observed that whether a statement violates the

Establishment Clause is largely “a legal question”

despite turning on whether an objective member of the

audience “would perceive it as a state endorsement of

prayer in public schools.” Id. at 308, 315. Just these

two instances demonstrate that one cannot simply

leap to the conclusion that a trademark’s conceptual

strength is a factual question merely because it may

turn on a consumer’s perspective.

Hana Financial is further distinguishable

because the ultimate “likelihood of confusion”

determination involves a multifactor test that the

Second Circuit and other circuits treat as a legal

question. The “tacking” issue in Hana Financial

involved

such

multifactor

subsidiary

decisionmaking, much less one laced with a balancing

test decided as a legal question.

Finally, it bears noting that RBC barely addresses

the actual reasoning employed by the Second Circuit

in this case.

RBC contends that a mark’s

“character”—whether it is generic, descriptive,

suggestive, and so forth—depends on its “meaning to

consumers,” thereby rendering it a factual question.

Pet.1. As noted, however, the Second Circuit agreed

with the “character” that the district court affixed to

RBC’s mark; it found “no error in the district court’s

determination that [RBC’s] mark is ‘suggestive,’” and

it did not disclaim that where a mark lies on the

distinctiveness spectrum is a question of fact.

App.54a. The Second Circuit simply explained that

the mere “label[]” a mark receives is not the end of the

conceptual-strength inquiry, and in that additional

analysis, there can be a “legal element.” App.55a.

Part of that “legal element” unquestionably

includes, for example, construing the meaning of a

word or noting that a plaintiff now claiming a strong

mark previously represented that its mark was weak,

as RBC did to both the PTO and a competitor when

such assertions served its then-purposes. The Second

Circuit was entirely correct to hold that these and

other features demonstrated that RBC’s mark, while

“suggestive,” was nevertheless “decidedly weak” as an

inherent matter. App.57a. That reasoning comports

with a rule stating that a mark’s “character” may be a

factual question (as RBC urges) while other aspects

have a “legal element” bearing on the assessment of

the mark’s overall conceptual strength.

CONCLUSION

The Court should deny the petition.

Respectfully submitted,

DIANA TORRES

KIRKLAND & ELLIS LLP

2049 Century Park East

Los Angeles, CA 90067

GEORGE W. HICKS, JR.

KIRKLAND & ELLIS LLP

1301 Pennsylvania Ave.

Washington, DC 20001

DALE M. CENDALI

Counsel of Record

KIRKLAND & ELLIS LLP

601 Lexington Avenue

New York, NY 10022

(212) 446-4800

dale.cendali@kirkland.com

Counsel for Respondent

July 14, 2025

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.